The Vitamin Shoppe Is Too Generic To Be Registered, Says Trademark Trial And Appeal Board

Is “The Vitamin Shoppe” too generic of a name for the parent company to obtain trademark registration? After a year-long battle within the Trademark Trial and Appeal Board (TTAB) system, the answer is a resounding yes. Without a disclaimer for the entire mark, the TTAB was unwilling to reverse the U.S. Patent and Trademark Office’s (USPTO) refusal of the applications for registration.

Vitamin Shoppe Procurement Services, Inc. previously filed four different trademark applications. Each application included “The Vitamin Shoppe” within. The USPTO required that a disclaimer be added for the entirety of each application, the parent company refused and the parent company challenged the ruling with the TTAB.

Proving acquired distinctiveness was not enough for the applicant in this case, because the examining attorney was focused on the genericness of the marks as opposed to the descriptiveness of same. When a mark is deemed generic, additional eveidence of acquired distinctiveness will not overcome a disclaimer requirement.

In its opinion on the matter, upholding the USPTO’s decision, the TTAB cited Judge Learned Hand who said the following roughly 100 years ago:

What do the buyers understand by the word for whose use the parties are contending? If they understand by it only the kind of goods sold, them, I take it, it makes no difference whatever what efforts the plaintiff has made to get them to understand more.

In that case, there was a finding that aspirin was a generic term, because consumers did not understand by the word anything more than a kind of drug.

The TTAB then looked at the genus of goods at issue in the present case, as well as whether the phrase is understood by the relevant public primarily to refer to that genus of goods.

  1. The TTAB found that the genus is a health and wellness store that primarily sells dietary and nutritional supplements.
  2. The TTAB found that the relevant public understands the phrase to refer to a place that primarily sells dietary and nutritional supplements (a literal vitamin shop).

Simply put, people use the phrase “vitamin shop” to describe a location that sells vitamins and other nutritional and dietary supplements. The phrase “The Vitamin Shoppe” merely adds the word “The” at the beginning. “Shoppe” is the same as “Shop.” The TTAB opinion even cited to various dictionaries to flesh out the fact that shoppe and shop are one and the same, and that the two words sound exactly the same.

There is good reason why a generic phrase would not be registered by the USPTO. The TTAB opinion accurately states, “One reason generic terms are not protected as trademarks is to ensure competitors have access to the words they need to identify the type of goods or services they offer.”

If “The Vitamin Shoppe” became registered on the principal register, without fully disclaiming same, then it could provide the applicant with too much power to cause others to cease and desist their use of similar phrases, despite their possible intention of merely describing their retail stores.

Importantly, the TTAB also highlighted its acknowledgment that the applicant already owned six trademark registrations that included “The Vitamin Shoppe,” but stated that those registrations played no role in its analysis. A prior registration will not serve to be persuasive nor relevant in a separate, distinct proceeding. Additionally, even though the applicant has been using “The Vitamin Shoppe” for more than forty years, that was not a good argument in seeking registration. Long use of a term does not automatically convert a generic term into a non-generic term.

It is understandable that the applicant did not wish to disclaim the entire term, because it would have lended little-to-no protection, which was the purpose of applying for a registration in the first place. On the other hand, it was also understandable that the TTAB upheld the USPTO examining attorney’s decision to bar registration, because to do otherwise would potentially chill competitors’ ability to use generic terms such as “vitamin shop” with the relevant consumer.